The new law essentially means the old ‘race to the Patent Office’ is back with a vengeance

In September 2011, President Obama signed into law the Leahy-Smith America Invents Act, enacting the most sweeping reform to the U.S. patent system in over half a century.

The act contains many positive changes that help to speed and streamline the patent process and return needed funds to the Patent Office to address the extensive backlog of unexamined patent applications. But, aside from some very narrow exceptions, the law specifies that as of March 16, 2013, the inventor who is first to file a patent application on an invention in the U.S. Patent Office now receives the patent right.

This is by far the biggest change in the law, and its impact could be substantial.

Previously, the inventor could carefully document a discovery, conduct relevant technical and market research and then proceed with a patent filing when the product was ready and, more importantly, funds were available from investors and others to proceed with the costly act of patenting a product. An earlier patent filed by a mighty General Motors or Microsoft would lose to a diligent inventor as long as the inventor could prove they invented first.

There was even a grace period under U.S. law allowing an inventor's product to be sold, used or displayed in public for a year before a patent application was required. All of that opportunity in the U.S. patent system disappeared on March 16.

If you publicly show/use a product, or offer to sell it, then you will not be able to claim a patent on it unless your patent application was filed beforehand. Moreover, if competitors are working on the same concept, the one with a faster research and development team or well-funded IP law staff would most likely make it to the Patent Office first and win the right to put you out of business in the very product you worked so hard and long to develop.

Provisional patents

So as an innovative (probably smaller) business, what do you do to prepare?

First, if you are considering filing a patent on an innovative concept, try to gather the details as soon as possible. Consider consulting a patent attorney early in the process. If you are a seasoned patent filer, realize that your competitors may have larger legal staff and in-house patent resources, enabling them to file more quickly.

Consider using provisional patents, which are slightly less formal (and less expensive), while providing a year of protection before a more formal patent is required. You can file multiple provisional applications as the developments mature, and fold them all into a single regular patent filing within a year of the first provisional.

Another option is stacking multiple concepts in a single provisional application to preserve as much of a new innovation as possible. In other words, if you have recently developed a new engine with several unique components you may wish to combine the separate components in one application to begin with.

Prior to this act, it often made sense to space out your patent application filings, and cover each component separately. Not anymore. It is most likely these different concepts will be divided out into separate patents later, as the Patent Office abhors examining multiple inventions for a single filing fee.

But in filing such a big “omnibus” patent application, the immediate concern is to file early and preserve as many patent rights versus your competitors and keep the patent filings ahead of your own public activities with the concept.

What can you do if a competitor beats you to Patent Office?

Part of the act opens opportunity for a competitor to challenge a patent by submitting prior art (earlier technology) to the Patent Office -- both during examination of a patent and some time after.

If you are aware that the Patent Office did not consider some earlier technology in allowing your competitor’s patent, then you can submit it to the Patent Office and persuade it to revoke or rewrite the troublesome competing patent without the extreme time and cost of a federal court case.

But there’s a catch: Well-funded competitors will be on the lookout for your new innovative patents in order to challenge them. While there is no assurance a patent will survive such a challenge, the best defense is to ask your patent counsel to conduct patentability searches for prior art early in the process. With this information, you will have a much better idea of what a competitor may use against you later, and your counsel will be able to craft a stronger patent, more able to survive any challenge by a competitor.